Ex Parte Jeong et al

Patent Trial and Appeal Board

Sep 20, 2016

13345441 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/345,441 01/06/2012
22150 7590 09/22/2016
F CHAU & AS SOCIA TES, LLC
130 WOODBURY ROAD
WOODBURY, NY 11797
FIRST NAMED INVENTOR
SEYOUNG JEONG
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
8836-744 1712
EXAMINER
BODNAR, JOHN A
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
09/22/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@chauiplaw.com
garramone@chauiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEYOUNG JEONG, TAEJE CHO, HOGEON SONG, and
KYU-HALEE
Appeal2014-003583
Application 13/345,441
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 22 and 24--26 under 35 U.S.C.
1 Our decision refers to the Specification (Spec.) filed January 6, 2012, the
Final Office Action (Final Act.) delivered March 4, 2013, Appellants'
Appeal Brief (Appeal Br.) filed July 15, 2013, the Examiner's Answer
(Ans.) delivered October 4, 2013, and Appellants' Reply Brief (Reply Br.)
filed December 4, 2013.
2 According to Appellants, the real party in interest is Samsung Electronics
Co., Ltd. Appeal Br. 1.
Appeal2014-003583
Application 13/345,441
§ 103(a) as unpatentable over Hayasaka3 in view ofNemeto4 and Chae, 5 and
further rejecting claim 2 5 adding Nath 6 and claim 2 6 adding Bureau. 7, 8 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a method of fabricating a semiconductor
device having a through silicon via (TSV). Spec. i-f 2; claim 22. Appellants
disclose that the method may include forming a via hole in a first surface of
a substrate, forming a first insulating film on an inner wall of the via hole,
forming a conductive connection part filling the inside of the via hole and
first insulating film, polishing a second surface of the substrate to expose the
conductive connection part, and "selectively forming a second insulating
film on the second surface of the substrate using an electro grafting method
to expose the conductive connection part." Spec. i-f 5. Appellants
alternatively describe this last step as "forming a second insulating film on
the polished bottom surface of the substrate except for the exposed
connection part." Id. at i-f 6.
3 US 6,809,421 Bl, issued October 26, 2004.
4 US 7,288,481 B2, issued October 30, 2007.
5 US 7,652,745 B2, issued January 26, 2010.
6 US 4,590,327, issued May 20, 1986.
7 US 2007 /0281148 Al, published December 6, 2007.
8 Pending claims 1-8 and 16-21 have been allowed by the Examiner and are
not before us on appeal. In addition, pending claim 23 has been objected to
only by the Examiner for containing allowable subject matter but depending
on a base rejected claim. As such, claim 23 is also not before us on appeal.
See Final Act. 2.
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Application 13/345,441
Claim 22, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
22. A method of fabricating a semiconductor device comprising:
preparing a substrate having a first surface and a second surface;
forming a via hole exposing at least a portion of the substrate from the
first surface of the substrate;
forming a first insulating film on an inner wall of the via hole;
forming a conductive connection part filling an inside of the via hole
including the first insulating film;
polishing the second surface of the substrate until the conductive
connection part is exposed; and
selectively forming a second insulating film on the second surface of
the substrate except for the exposed conductive connection part, wherein the
second insulating film is a polyvinilic-based material[.]9
ANALYSIS
Appellants do not argue the claims on appeal separately, but instead
focus their arguments on claim 22 oniy. Appeai Br. 3-7. Accordingiy,
dependent claims 24--26 stand or fall with claim 22.
9 We note that claim 22 does not end with a period. In addition, we note
Appellants' spelling of the material of the second insulating film,
"polyvinilic-based" material, is incorrect; it should read as "polyvinylic-
based" or "polyvinyl-based." See http://www.dictionary.com/browse/vinyl,
last accessed September 9, 2016 (" 1. Chemistry. the vinyl group, the
univalent group C3H3, derived from ethylene. 2. any resin formed by
polymerizing vinyl compounds, or any of a group of plastics made from
such resins.") and http://www.dictionary.com/browse/-yl, last accessed
September 9, 2016 ("Chemistry 1. a suffix used in the names of radicals:
ethyl.") The Examiner and Appellants should consider addressing these
issues upon further prosecution in this application.
3
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Application 13/345,441
The dispositive issue before us on appeal is whether Appellants have
identified a reversible error in the Examiner's findings that Nemoto and
Chae teach selectively forming a second insulating film on the second
surface of the substrate except for the exposed conductive connection part.
We answer this question in the negative, and sustain the above rejections
based on the findings of fact, conclusions of law, and rebuttals to arguments
well expressed by the Examiner in the Final Office Action and the Answer.
The following comments are added for emphasis.
The Examiner finds Hayasaka teaches a method of fabricating a
semiconductor device having a via as recited in claim 22, except for
"polishing the second surface of the substrate until the conductive
connection part is exposed and selectively forming a second insulating film
on the second surface of the substrate except for the exposed conductive
connection part, wherein the second insulating film is a polyvinilic-based
materiaL" Finai Act. 4. The Examiner further finds Nemoto teaches
polishing the second surface of the substrate until the conductive connection
part is exposed, and selectively forming a second insulating film on the
second surface of the substrate except for the exposed conductive connection
part. Id. The Examiner notes that Nemoto teaches forming the second
insulating film only on the exposed surface of the substrate, and not on the
exposed conductive connection area. Id., citing Nemoto, Fig. 57 and col. 14,
11. 41--48. The Examiner concludes it would have been obvious to modify
Hayasaka's process to polish the second surface of the substrate until the
conductive connection part is exposed, and then selectively form the second
insulating film on the second surface of the substrate except for the exposed
conductive connection part as taught in Nemoto, to permit connection of the
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Application 13/345,441
device to another via the exposed conductive connection part and to provide
protection to the second or back surface of the substrate. Id.
As for the use of a polyvinyl-based material for the second insulating
film, the Examiner finds Chae teaches selectively forming a polyvinyl-based
material on select areas of a semiconductor device while leaving other areas
exposed. Final Act. 4. Based on Chae's teaching, the Examiner concludes
that the use of polyvinyl-based material as the second insulating film in
Hayasaka's process, as modified by Nemoto's teaching, to provide
insulation to the substrate surface while allowing the exposed conductive
portion to be connected to other devices would have been obvious to one of
ordinary skill in the art. Id.
Appellants argue that Nemoto fails to teach "selectively forming a
second insulating film on the second surface of the substrate except for the
exposed conductive connection part," as recited in claim 22. Appeal Br. 4.
AppeUants assert that aithough Nemoto, Figure 57, shows an insuiating fiim
(protection film 2010) on the back surface of the substrate, there is no
disclosure in Nemoto that the insulating film is selectively formed on the
back surface of the substrate. Id. at 5; Reply Br. 3. According to
Appellants, N emoto' s insulating film could have been first deposited on the
entire substrate including the conductive connection part, and then the
portion of the film covering the conductive connection part could have been
etched away. Appeal Br. 5; Reply Br. 3. In other words, Appellants argue
10 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Application 13/345,441
that merely looking at the structure of Figure 57, one cannot determine
whether the insulating film is formed selectively or otherwise. Id.
We disagree. Nemoto describes Figure 57 as similar to the structure
of Figure 50, except that "a protection film 20 is formed on the back surface
of the semiconductor substrate 1." Nemoto 14:41--48. Nemoto further
describes in the related structure of Figure 5 8, that "protection film 20 is
formed on the back surface of semiconductor substrate 1 and bump 11 is
formed on an exposed surface of columnar conductive portion 80." Id.,
14:49--58. That Nemoto does not specifically teach that the formation of the
protection film 20 is "selective" is not dispositive, because Nemoto does not
teach any additional steps for removing a portion of protection film 20 in
these figures after it is formed on the back surface of the substrate 1, whether
by etching or polishing or otherwise. Nemoto states that the insulating film
is formed on the second surface of the substrate and a bump is formed on an
exposed surface of the conductive connection part. As such, one of ordinary
skill in the art would understand from N emoto 's disclosure that the
protection film 20 is formed on the back surface of the substrate 1 except for
the columnar conductive portion 80. Appellants' speculation that Nemoto
could have formed the film over the back surface of the substrate and the
columnar conductive portion followed by removal of the portion of the film
covering the columnar conductive portion is merely a possible alternative to
Nemoto's disclosed process, unsupported by Nemoto's written description.
Accordingly, a preponderance of the evidence supportsthe Examiner's
finding that Nemoto selectively forms a second insulating film on the second
surface of the substrate except for the exposed conductive connection part.
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Application 13/345,441
Appellants next argue that Chae fails to teach "selectively forming a
second insulating film on the second surface of the substrate except for the
exposed conductive connection part," as recited in claim 22. Appeal Br. 6.
Appellants urge that Chae requires an additional process step for separating
a metal pattern into hydrophilic and hydrophobic regions in order to form
the insulating film on the hydrophilic region only. Id. at 7. Appellants also
assert that the embodiment of claim 22 does not require a separate step or
process in selectively forming the insulating film on the second surface of
the substrate except for the exposed conductive connection part. Id.
Because Chae requires an additional step of separating the metal pattern into
hydrophilic and hydrophobic regions, Appellants argue that Chae teaches
away from the "selectively forming" process recited in claim 22.
Appellants' arguments regarding Chae are not persuasive of reversible
error. Although claim 22 does not require a separate step or process in
seiectiveiy forming the insuiating fiim on the second surface of the substrate
except for the exposed conductive connection part, neither does claim 22
exclude an additional step or process for accomplishing this selective
formation. Further, Appellants fail to explain how Chae's additional step of
separating the metal pattern into hydrophilic and hydrophobic regions would
teach away from selectively forming the insulating film on the substrate
surface except for an exposed conductive connection part. To the contrary,
once the regions have been created, the insulating film is selectively formed
only on the hydrophilic regions but not on the hydrophobic regions.
Finally, in their Reply Brief, Appellants present a new argument not
raised in the Appeal Brief concerning Chae' s teaching that the insulating
film is formed on a portion of the conductive material. Reply Br. 4. Under
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regulations governing appeals to the Board, any new argument not timely
presented in the Appeal Brief will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Appeal Brief. See 37 C.F.R. § 41.37(c)(l)(iv)
(third sentence) and§ 41.41(b)(2). See also, In re Hyatt, 211F.3d1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834
(BP AI 2010) (informative) (explaining that arguments and evidence not
timely presented in the principal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.").
AppeUants have provided this record with no such showing. Accordingiy,
we will not consider this new argument in the Reply Brief. 11
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Answer, the decision of the Examiner
rejecting claims 22 and 24--26 under 35 U.S.C. § 103(a) as unpatentable over
11 Appellants have not shown that Chae' s teaching would not suggest to the
ordinary artisan how to selectively form the insulating film in Hayasaka over
the substrate surface except for the conductive connection part. Indeed,
Chae' s teaching provides guidance as to how such would be accomplished
with a reasonable expectation of success.
8
Appeal2014-003583
Application 13/345,441
Hayasaka, Nemeto, and Chae, alone or further combined with Nath or
Bureau, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
9